PatentNext Takeaway: The President’s recent Executive Order (EO) regarding artificial intelligence (AI) addresses, among other things, intellectual property (IP). The EO directs the U.S. Patent and Trademark Office (USPTO) and U.S. Copyright Office to provide guidance and recommendations on IP issues of patent inventorship, patent eligibility, and copyright authorship in view of Artificial Intelligence (AI). While the guidance and recommendations will not have the force of law, they are nonetheless expected to include data and insights from stakeholders that could form a basis for future legislation and/or provide persuasive information as AI-related cases find their way into U.S. courts. Continue Reading Intellectual Property (IP) impacts from President Biden’s Executive Order on Artificial Intelligence (AI)
PatentNext Takeaway: To date, the Federal Circuit has not reviewed many cases involving artificial intelligence (AI). However, in a recent case, the Federal Circuit found that a “machine learning” claim element lacked sufficient enablement because both the claim itself and the written description of the patent to which it belonged failed to describe “how” the claimed invention implemented this element. In view of this ruling, patent practitioners should endeavor to explain sufficiently in the written description the specific aspects of how machine learning features (and other computer-implemented invention features) operate in order to demonstrate sufficient enablement.Continue Reading The Federal Circuit hints at Enablement requirements for Artificial Intelligence (AI) Inventions
I am excited to announce the publication of the American Intellectual Property Law Association (AIPLA)’s article on “IP Aspects of Augmented Reality and Virtual Reality Technologies.” Continue Reading Announcing AIPLA article on Augmented Reality(AR) / Virtual Reality(VR): IP Aspects of Augmented Reality and Virtual Reality Technologies
I am excited to announce the publication of the Intellectual Property Owner (IPO)’s white paper on “Software and Medical Device Guidance: A Global Perspective.”
The paper was authored by the IPO’s Software and Medical Device Subcommittee, which I had the honor and pleasure of leading in 2022. The Subcommittee reports to the IPO’s Software Committee. Continue Reading Announcing IPO white paper on a Global Perspective on Software and Medical Device Guidance
PatentNext Summary: Following the August 2022 Federal Circuit decision in Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022), in which the court ruled that artificial intelligence (AI) could not be an inventor by itself, the USPTO has now requested comments regarding AI and inventorship. Continue Reading USPTO Request for Comments on AI as an Inventor
PatentNext Summary: Artificial Intelligence (AI) typically involves certain common aspects such as training data and AI models trained from that training data. Nonetheless, a recent Patent Trial and Appeal Board (PTAB) decision found that it is not always obvious to combine these common aspects to render an AI-based medical device invention unpatentable.Continue Reading PTAB finds Artificial Intelligence (AI) Medical Device Patent not so Obvious
PatentNext Summary: In August 2022, the Federal Circuit in Thaler v. Vidal held that U.S. patent law requires a “human” inventor. In 1884, the U.S. Supreme Court in Burrow-Giles Lithographic Co. v. Sarony held that a human could be the “author” of a photograph. In both cases, a type of “machine” was used to produce an output. Namely, in Thaler a “creativity machine” (a type of Artificial Intelligence (AI)) output and conceived the subject matter of a patent application allegedly without human involvement. In Burrow-Giles a camera output (captured) a photograph, but with human involvement (i.e., the photographer selected and arranged the scene of the photograph). While the Thaler court found that a machine alone cannot be an inventor, it raised the possibility of AI-assisted inventorship that included human involvement (e.g., sole or joint inventorship). Future courts considering the issue of AI inventorship could find the 1884 case of Burrow-Giles instructive, where the photographer’s selection and arrangement for the scene of a photograph in 1884 provides a useful analogy to a modern-day human AI developer’s selection and arrangement of training data, hyperparameters, or other features typically required to train and/or use an AI model.
Continue Reading The Curious Case of Burrow-Giles Lithographic (an 1884 U.S. Supreme Court decision involving “new” camera technology), and how it could help Shape Today’s Thinking on Artificial Intelligence (AI) Inventorship
PatentNext Takeaway: The concept of the “Metaverse,” while decades old, is just starting to gain traction today. Early efforts to establish the Metaverse came from the video game industry. That is, as video games have become more modern, they are increasingly designed to have interactive virtual worlds, which is a hallmark of the Metaverse. Because of this, we can expect the U.S. Patent and Trademark Office (USPTO) and courts to look to prior art and previous cases involving video game technology to decide Metaverse-related issues in the future. For the same reason, we can also use best practices for patenting software-related technologies (upon which video game technology relies) to prepare Metaverse-related patents.
Continue Reading Exploring the Metaverse and Patent-related topics
PatentNext Summary: Artificial Intelligence (AI) Patent Application filings continue their explosive growth trend at the U.S. Patent Office (USPTO). At the end of 2020, the USPTO published a report finding an exponential increase in the number of patent application filings from 2002 to 2018. This trend has continued. In addition, current data shows that AI-related application filings pertaining to graphics and imaging are taking the lead over AI modeling and simulation applications.
Continue Reading Artificial Intelligence (AI) Patent Filings Continue Explosive Growth Trend at the USPTO
I have been monitoring patent application filings around the world that list DABUS (the “Device for the Autonomous Bootingstraiming of Unified Sentience”) as the sole inventor. At issue is whether an Artificial Intelligence (AI) machine alone can be listed as an inventor on a patent application. A detailed chart, with country-by-country decisions, can be found here: Can an Artificial Intelligence (AI) be an Inventor?
In today’s posting, I provide updates to this article. These come from the respective decisions of the patent offices, or related appellant courts, of New Zealand, EPO, and the UK.Continue Reading Updates on AI Inventorship: New Zealand, the EPO, and the UK allow an Artificial Intelligence (AI) machine to be listed as a Joint Inventor along with at least one Human Inventor